DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of claims 1-11 and 16-20 in the reply filed on December 18, 2025 is acknowledged. The traversal is on the ground(s) that the claims are found to have unity in the Written Opinion of the International Search Authority. This is not found persuasive because, while PCT standard of restriction requirement is applied, the determination of unity or lack thereof of the ISA has no binding on the USPTO practice. In addition, as shown in the art-based rejection herein below, the common technical feature between the two inventions does not make a contribution over the prior art. Moreover, as shown in the restriction requirement, burden of search and examination exist if restriction of claims is not imposed. The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 requires that the shell comprises only one monomeric unit m1 and precludes all other monomeric units; however, claim 9 which depends on claim 8 recites additional monomeric units which fail to further limit the subject matter of claim 8. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9, 11 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ZHOU (CN 106977654).
Claims 1-3: Zhou teaches a core-shell structure comprising a polymeric shell and a core, wherein the shell is obtained from a monomer comprising the at least one (meth)acrylic monomer, in the presence of the core, and wherein the core comprises at least one corrosion inhibitor (Zhou, translation copy, page 4; and also claims). The corrosion inhibitor includes benzo thiazole (Zhou, translation copy, page 5, 5th paragraph, which inherently has a water solubility at 23 °C of less than 40 g/L. The non-aqueous solvent is recited as ‘optional” and thus is not a positive claim limitation.
Claim 4: Zhou does not report the particle diameter of the core-shell structure; however, as the process of Zhou is essentially similar to the method of the claimed invention using the same materials as discussed in claims 1-3 above and exemplified in Examples 1-2, it is expected that the resulted core-shell particles would have particle diameter within the claimed range of 0.1 to 30 µm.
Claim 5: Zhou teaches the core to shell weight ratio being 1: 1-1: 2 (Zhou, claim 1); which means the shell would run from 50% to 67% by weight of the core-shell structure and which is well within the claimed range of the shell proportion being 1 to 70 wt.-%, based on the total weight of the core-shell structure.
Claim 6: Because the non-aqueous solvent is only “optionally present”, it is not required in the claim and thus not given patentable weight.
Claim 7: Zhou teaches a core-shell structure comprising a polymeric shell and a core, wherein the shell is obtained from a monomer mixture comprising the at least one (meth)acrylic monomer. The other features are either in the alternative or optional and thus not required in the claim.
Claim 8: Zhou teaches a core-shell structure comprising a polymeric shell and a core, wherein the shell is obtained from a monomer comprising the at least one (meth)acrylic monomer as discussed in claim 1 above
Claim 9: As required in claim 8, only one monomeric unit m1 is present in the shell, and thus the proportion of the monomeric unit m1 is present in exceed of all other monomeric units (which are absent by the subject matter defined in claim 8 upon which claim 9 depends) in the shell.
Claim 11: Zhou teaches the core-shell structure as discussed in claim 1 above, wherein the solid content is present up to 70 wt% of the aqueous composition (See page 4, Embodiment 1 and page 5, Example 2).
Claims 16-17: Zhou teaches corrosion inhibitor being benzo thiazole (Zhou, translation copy, page 5, 5th paragraph, which inherently has a water solubility at 23 °C of less than 30 g/L and is an organic compound comprising an aromatic heterocyclic moiety.
Claim 18: Zhou does not report the particle diameter of the core-shell structure; however, as the process of Zhou is essentially similar to the method of the claimed invention using the same materials as discussed in claims 1-3 above and exemplified in Examples, it is expected that the resulted core-shell particles would have particle diameter within the claimed range of 0.1 to 20 µm.
Claim 19: : Zhou teaches the core to shell weight ratio being 1: 1-1: 2 (Zhou, claim 1); which means the shell would run from 50% to 66% by weight of the core-shell structure and which is well within the claimed range of the shell proportion being 2 to 65 wt.-%, based on the total weight of the core-shell structure.
Claim 20: Because the non-aqueous solvent is only “optionally present”, it is not required in the claim and thus not given patentable weight.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4, 10, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou in view of Zhao (US-2014/0187672).
Claims 4 and 18: Zhou teaches the core-shell structure of the claimed invention as discussed above. However, Zhou does not report the particle diameter of the core-shell structure. In the same field of endeavor, i.e. corrosion resistance particulate material, Zhou teaches corrosion inhibiting microgels comprising polymerizable monomers including mono-functional or bi-functional acrylic monomers; mono-functional or bi-functional methacrylic monomers and corrosion inhibitor including a benzothiazole-based compound (Zhao, claims 1 and 4). Thus, it can be seen that the microgels of Zhao is essentially equivalent to the core component of the core-shell structure of Zhou. The core formed from the polymer network and the corrosion inhibitor benzothiazole-compound has an average diameter of 0.10-10 μm (Zhao, para. 0024). Thus, it can be extrapolated from the particle diameter of the core (0.1-10 mm) to arrive at the core-shell structure of Zhou being within or overlapping the range of 0.2 to 30 mm.
Claim 10: Zhou teaches the core-shell structure of the claimed invention as discussed above; however, the proportion of the corrosion inhibitor in the core is lower than 50 wt%. Zhao teaches making corrosion inhibitor microgel comprising the same components as the core materials of Zhou’s core-shell structure as discussed in claim 4 above with the exception that the proportion of corrosion inhibitor is at least 50 wt% of the total solid content of the microgel (Zhao, para. 0085-0086 and 0094-0095). Thus, it would have been obvious as matter of choice to incorporate up to 50 wt% of the corrosion inhibitor in the core component of the core-shell structure of Zhou with the expectation that the corrosion inhibiting capability of the core-shell structure would be enhanced due to the increased amount of the corrosion inhibitor as taught by Zhao.
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
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